Appeal No. 2002-1029
Application 08/869,328
process is ordinarily within the skill in the art.” See
Examiner’s Answer, page 4. The examiner cites In re Boesch,
617 F.2d 272, 205 USPQ 215 (CCPA 1980). However, in Boesch, it
was held that “optimizing a variable which was known to be result
effective” was within the ordinary skill in the art (emphasis
supplied). Boesch, 617 F.2d at 276, 205 USPQ at 219, quoting
In re Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8-9 (CCPA 1977).
Thus, under such a scenario, the examiner has a burden of
establishing that the prior art recognizes that the variable is
result effective.
In the present case, the patent to Yu merely discloses
sampling acoustic energy in a range above 20,000 Hz. There is no
disclosure that any frequency affects the sensitivity of the
process cutoff or that any frequency above 20,000 Hz is better
than any other frequency. In fact, Yu discloses nothing other
than frequencies above 20,000 Hz may be used. There is certainly
no disclosure that frequency is a variable that can be optimized
to effect a result. Accordingly, in our view, the prior art
taken as a whole, as combined by the examiner, is merely an
invitation to experiment -- an example of obvious to try.
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